WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Allianz SE v. IP Legal, Allianz Bank Limited

Case No. D2017-0287

1. The Parties

The Complainant is Allianz SE of Munich, Germany, internally represented.

The Respondent is IP Legal, Allianz Bank Limited of Johannesburg, South Africa.

2. The Domain Name and Registrar

The disputed domain name <allianzkenya.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2017. On February 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2017.The Complainant filed a supplemental filing on March 2, 2017 and March 6, 2017 in relation to the incomplete address provided by the Respondent. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2017.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on March 31, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is Allianz SE, a German-based insurance and financial services company.

The Complainant owns, among others, the following trademark registrations:

Additionally, the Complainant has registered, in the name of one of its subsidiaries, the following domain names:

Domain Name

Registration Date

<allianz.com>

May 21, 1997

<allianz.us>

May 16, 2002

<allianz.fr>

April 15, 2005

<allianz-africa.com>

August 31, 2009

<allianzusa.com>

December 16, 2002

The disputed domain name <allianzkenya.com> was registered on August 2, 2016. The disputed domain name resolves to a website with the following content: “Website Under Construction. Webmail. Cpanel”.

5. Parties’ Contentions

A. Complainant

The Complainant argues the following:

I) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

That the disputed domain name is confusingly similar to the Complainant’s trademarks.

That the geographical term “kenya” included in the disputed domain name suggests that the Respondent is the local provider of insurance and financial services under trademark ALLIANZ in Kenya.

That one of the Complainant’s subsidiaries operates in Kenya under the name “Allianz Kenya”. That Allianz Kenya operates through the website “www.allianz-kenya.com”.

That the likelihood of confusion is increased by the Complainant’s practice of registering and using domain names which include the trademark ALLIANZ, in addition to a geographical term.

That the high level of recognition and the distinctive character of the trademark ALLIANZ has been recognized by authorities such as the Higher Regional Court in Munich and the Office for Harmonization in the Internal Market (current European Union Intellectual Property Office). That said authorities held the ALLIANZ trademark to have a high level of recognition amongst the general public.

II) The Respondent has no rights or legitimate interest in respect of the disputed domain name.

That the website to which the disputed domain name resolves is currently inactive.

That the company whose name was disclosed by the Registrar as underlying registrant of the disputed domain name, does not seem to exist. That there are no signs of said company’s existence in the address provided by the Respondent upon registration of the disputed domain name.

That the Respondent uses the Complainant’s name without authorization. That in addition, the Respondent has invented a fake company which incorporates the Complainant’s name to appear to be a legitimate member of the Complainant’s group.

That, since the Complainant has no control over the Respondent’s actions, any use related to the disputed domain name made by the Respondent could damage the Complainant’s reputation.

That the Respondent holds no trademark registrations for the term “Allianz”, and has never been granted any license or any other form of authorization or consent by the Complainant to use the ALLIANZ trademark.

That the Respondent is attempting to trick Internet users hoping to access a website of the Complainant, or communicate with one of the Complainant’s subsidiaries.

That the Respondent is trading on the fame and good name of the Complainant’s trademark.

That the Respondent’s actions do not match any of the circumstances set forth in the Policy which could assist the Respondent in proving to have any rights to or legitimate interests in the disputed domain name.

That the Respondent is not commonly known by the disputed domain name.

III) The disputed domain name has been registered and is being used in bad faith

That by registering and using the disputed domain name, the Respondent has attempted to create a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.

That the ALLIANZ trademark is well-known around the world, in connection with insurance and financial services.

That the term “allianz” corresponds to the German language, which is not the official language of Kenya.

That the Respondent sought to register the disputed domain name because of its possible association with the Complainant.

That the contact details provided by the Respondent to the Registrar show the Respondent’s awareness that it was infringing the Complainant’s intellectual property rights.

That the fact that the disputed domain name is inactive does not prevent a finding of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Since the Respondent has failed to reply to the Complainant’s assertions, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy that is sufficient to order the transfer of the disputed domain name (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,
WIPO Case No. D2006-0292).

A. Identical or Confusingly Similar

The Complainant has proved to own trademark registrations for ALLIANZ around the world.

The disputed domain name <allianzkenya.com> is confusingly similar to the Complainant’s trademark ALLIANZ, as it comprises said trademark in its entirety.

The addition of the geographical term “Kenya” does not suffice to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (see Playboy Enterprises International, Inc. v. Zeynel Demirtas,
WIPO Case No. D2007-0768). In fact, given that one of the Complainant’s subsidiaries operates in Kenya under the name “Allianz Kenya”, the confusing similarity between the disputed domain name and the ALLIANZ trademark is increased, as it may suggest that the disputed domain name resolves to the official website of said subsidiary (see Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale,
WIPO Case No. D2005-0755; and Koninklijke Philips Electronics NV v. Gopan P.K.,
WIPO Case No. D2001-0171).

Finally, the addition of the generic Top-Level domain (“gTLD”) “.com” to the disputed domain name does not prevent the disputed domain name from being confusingly similar to the Complainant’s trademark (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,
WIPO Case No. D2000-1698; and America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM,
WIPO Case No. D2001-0918).

The first element has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights to or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant is the owner of a significant number of trademark registrations for ALLIANZ around the world, including Kenya, the country referred to in the disputed domain name.

The Complainant argues that the company whose name was disclosed as underlying registrant of the disputed domain name, and therefore the named Respondent in this case, does not exist. The Complainant has backed this assertion by submitting evidence of a research regarding the address and company name provided by the Respondent to the Registrar. The outcome of this research shows that the South African address provided by the Respondent does not correspond to a company named “Allianz Bank Limited”. Moreover, the Complainant argues that no company under the name “Allianz Bank Limited” was found in the database of the South African Companies and Intellectual Property Commission.

Absent any evidence to the contrary filed by the Respondent, it is reasonable to presume that the Respondent’s name and contact details provided by the Respondent to the Registrar are not accurate. Hence, the mere assertion made by the Respondent of being named “Allianz Bank Limited” during the process of registration of the disputed domain name cannot be regarded as evidence of the Respondent having been known by the disputed domain name, or having rights to or legitimate interests in the trademark “Allianz”.

The Complainant argues that the disputed domain name is currently inactive. The Respondent did not contest this assertion. A review of the disputed domain name conducted by this Panel, shows that it resolves to a web page with the following sign: “Website Under Construction. Webmail. Cpanel.” There is no evidence in the case file which could indicate that the Respondent has used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, or that the Respondent has made a legitimate noncommercial or fair use in relation to the disputed domain name.

This Panel considers that the Complainant established a prima facie case that the Respondent has no rights to, or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (see INTOCAST AG V. LEE DAEYOON,
WIPO Case No. D2000-1467; Cellular One Group v. COI Cellular One, Inc.,
WIPO Case No. D2000-1521; and Skipton Building Society v. skiptonassetmanagement.com, Private Registration,
WIPO Case No. D2011-0222).

The Respondent has not submitted any evidence or arguments which could demonstrate its rights to, or legitimate interests in the disputed domain name. Neither it has rebutted any of the Complainant’s contentions.

In an email of March 6, 2017, the Complainant has submitted proof of the Respondent having provided inaccurate information to the Registrar of the disputed domain name, which cannot be considered as a good faith attempt to use the disputed domain name under the circumstances set forth by paragraph 4(c) of the Policy.

The second element of the Policy to have been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The circumstances surrounding the registration of the disputed domain name show that the Respondent had actual knowledge of the Complainant, its trademark ALLIANZ, and the locations in which the ALLIANZ−branded services are offered. Considering that the trademark ALLIANZ is used in Kenya by one of the Complainant’s subsidiaries operating under the name “Allianz Kenya”, and taking into account the particulars of the registration of the disputed domain name (naming “Allianz Bank Limited” as the registrant organization), the Panel considers that the Respondent has had the intention to attract traffic by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent or its web page.

Previous UDRP decisions have arrived at a finding that registering a domain name with knowledge of another company’s rights in the disputed domain name and with intention to divert traffic, may serve as evidence of bad faith registration (see Digital Spy Limited v. Moniker Privacy Services and Express Corporation,
WIPO Case No. D2007-0160; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,
WIPO Case No. D2002-0562; and The Gap, Inc. v. Deng Youqian,
WIPO Case No. D2009-0113). This Panel believes this to be one such case.

As it was previously mentioned, the disputed domain name does not resolve to an active website. However, according to previous UDRP cases, the passive holding does not preclude a finding of use in bad faith.

This Panel finds that the circumstances of this case match the factors set forth in the Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003, as detailed below:

- The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name.

- As proven by the Complainant, the Respondent has taken active steps to conceal its true identity, by registering the disputed domain name under a company name that does not correspond to a company registered in South Africa, where the Respondent claimed to be domiciled.

- The Respondent has provided inaccurate contact details to the Registrar, which is a clear breach of the Registrar’s registration agreement.

- Under these circumstances, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.

The passive holding of the disputed domain name, alongside the evidence filed by the Complainant, are sufficient to conclude that the disputed domain name was registered and is being used in bad faith (see Telstra, supra.).

This Panel finds it implausible that the Respondent would make any use of the disputed domain name, which would not be likely to cause confusion of some kind (see Sony Kabushiki Kaisha v. sony.net,
WIPO Case No. D2000-1074).

The third element of the Policy has been fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <allianzkenya.com> be transferred to the Complainant.